GI Case Study

8/3/2019 GI Case Study

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A CASESTUDYOF SCOTCH

WHISK


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INTRODUCTION

The underlying issue concerns with the labeling

processes for internationally marketed products

named for their origin, area or nation where theyare produced.

Systematic & planned efforts have been directed

by Scotland to retain its sole ownership of the

label scotch for its scotch whisky.

It has successfully enforced its ownership in the

EU & in others part of the world.


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THEPRODUCT & ITS

ASSOCIATIONWITH SCOTLAND

It is generally identified as major product from Scotland

that is closely linked with its environment , people &

culture.

The distillation & maturation processes for making ofscotch whisky involves the use of Scottish peat to smoke

the barley or the Scottish oak to make the maturation

casks or the Scottish air to seep thru the casks & give the

spirit its character.

The casks in which scotch is matured is of significance as

they are responsible for character & color of the product

as it is believed that Scottish air that diffuses thru the

porous wood of the casks is absorbed by the spirit to give

it distinctive taste.


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PROTECTINGSCOTCH &

ENFORCINGITSGI

The scotch whisky association, lobbing voice for

scotch producers & distillers, has been mot

aggressive to protect the interests of scotchwhisky manufactures in Scotland & to enforce

their rights on scotch as a GI in various parts of

the world including unfair tax discrimination as

it contributes significantly to British trade.


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JUDGMENTBYA UK COURT

ON MANXWHISKY

The Glen Kella production company in the Isle of Man, an islandnear Scotland was producing & selling its product called ManxWhisky.

The Scottish claimed that Glen Kella's production process was

distorting the whisky label.

In & around the UK the term scotch or whisky automaticallycreates associating with the traditional spirit of Scotland.

It was noted that Glen Kella process involved a 3rd distillation of

scotch whisky to remove the tar & color from traditional scotchto produce a colorless from the spirit.

The scotch distillers & the scotch whisky association sated thatwhisky must retain its color, aroma & taste derived from itsdistillation and maturation & that somehow the 3rd distillation

process destroys the essence of whisky.


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After detailed deliberations , the British highcourt on 24th march 1997 gave a judgment thatthe EU regulations governing spirits that qualifywhisky as such & to allow glen kella to call itselfwhisky would risk an indigenous process oferosion of the integrity of the reputation or auraof the true whisky.

Thus glen kella could no longer market itsproduct as true whisky & Scotland was able touphold the integrity of the whisky whichdominates world market..


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INDIANCOURTSONSCOTCH

WHISKY

There have been at least six cases since 1986 when the

courts have restrained local distilleries from selling

whiskies with names like Royal Scot, Grand Scot and Henry

Scot.

A few years ago, a court in India ruled against a leading

Indian whisky-maker for marketing a spirit that copied the

design and livery of the Glenfiddich bottle.

The Scotch Whisky Association went to court in India to

prevent Khoday Distilleries from selling its whisky under

the Peter Scot brand. The mark Peter Scot was registered

in India in the name of Khoday Distilleries Limited

(registration 273203 in class 33) in 1971.


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The Scotch Whisky Association appealed to the Trade MarksRegistrar in India to remove the mark Peter Scot from theRegister. The Registrar allowed the application. KhodayDistilleries subsequently appealed to the High Court.

The Chennai High Court found that even the use of the word"Scot" by Khoday Distilleries in relation to whisky isunacceptable.

The Scotch Whisky Association & Others vs. Golden BottlingLimited [CS (OS) No.406/2004], the High Court of Delhi,

delivered its judgment on 20.04.2006.

On 22nd April, 2004, summonses were issued in the suit and theDefendant was restrained from dealing in any whisky containingthe word "Scot". Despite service, no one appeared on behalf ofthe Defendant. Accordingly, by an order dated 10th December

2004, the Defendant was proceeded against ex parte.


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While upholding the permanent injunction the judgestated :The Plaintiffs are entitled to the permanent injunctionprayed for and also to damages to the extent of

Rs.5,00,000/-. The Plaintiffs will also be entitled to costs ofRs.3, 10,000/- which they say they have incurred in thislitigation."

Challenging the order of the HC, Khoday Distilleries moved

the Supreme Court in India and pleaded that thoughScotch Whisky Distillers Association (SWDA) hadknowledge about registration of the 'Peter Scot' trademarkas early as September 1974; it waited for more than 12years to move the Registrar for deletion of the 'Peter Scot'trademark


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Khoday Distilleries argued that whatever be the merits of the

arguments on the part of the association, its plea for deletion of

the trademark was hopelessly time-barred as the product had

been in the market for more than a decade.

The HC had held that the adoption of a name which indicates

the geographical region even when the goods had no

connection with that place, was itself dishonest.

The Supreme Court Bench comprising Justices S B Sinha and

Lokeshwar Singh Panta allowed the appeal of Khoday Distilleriesand set aside the HC judgment giving legitimacy to the

trademark 'Peter Scot'.

The Supreme Court elaborately considered the tests applied by

courts in England, Australia and USA regarding deceptive

similarity of goods.


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On May 27th 2008, the Court concluded that it was

concerned with the class of buyers who are supposed to

know the value of money, the quality and content of

Scotch whisky and the difference in the process of

manufacture, the place of manufacture and their origin.

Applying these tests the Court decided in favour of Khoday

Distilleries

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